I/P ENGINE, INC. v. AOL INC.

37 Pages·2012·0.21 MB·English

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________

I/P ENGINE, INC.,
Plaintiff-Cross Appellant,

v.

AOL INC., GOOGLE INC., IAC SEARCH & MEDIA,
INC., GANNETT COMPANY, INC., AND
TARGET CORPORATION,
Defendants-Appellants.
______________________

2013-1307, -1313
______________________

Appeals from the United States District Court for the
Eastern District of Virginia in No. 11-CV-0512, Judge
Raymond Alvin Jackson.
______________________

Decided: August 15, 2014
______________________

DAVID A. PERLSON, Quinn Emanuel Urquhart & Sulli-
van LLP, of San Francisco, California, argued for defend-
ants-appellants. With him on the brief were EMILY C.
O’BRIEN, ANTONIO R. SISTOS, MARGARET P. KAMMERUD,
and JOSHUA L. SOHN; and DAVE NELSON, of Chicago,
Illinois. Of counsel were DAVID L. BILSKER and KEVIN
ALEXANDER SMITH, of San Francisco, California, and
ROBERT B. WILSON, of New York, New York. Of counsel
2 I/P ENGINE, INC. v. AOL INC.
on the brief for Google Inc. were DARYL L. JOSEFFER, King
& Spalding LLP, of Washington, DC, and ADAM M.
CONRAD, of Charlotte, North Carolina.

JOSEPH R. RE, Knobbe, Martens, Olson & Bear, LLP,
of Irvine, California, argued for plaintiff-cross appellant.
With him on the brief was STEPHEN W. LARSON. Of Coun-
sel on the brief were JEFFREY K. SHERWOOD, FRANK C.
CIMINO, JR., KENNETH W. BROTHERS, DAWN RUDENKO
ALBERT, CHARLES J. MONTERIO, JR., and JONATHAN L.
FALKLER, Dickstein Shapiro LLP, of Washington, DC.

EDWARD R. REINES and JILL J. SCHMIDT, Weil, Gotshal
& Manges LLP, of Redwood Shores, California, for amici
curiae Newegg Inc., et al.
______________________

Before WALLACH, MAYER, and CHEN, Circuit Judges.
Opinion for the court filed PER CURIAM. Concurring
Opinion filed by Circuit Judge MAYER. Dissenting
Opinion filed by Circuit Judge CHEN.
PER CURIAM.
I/P Engine, Inc. (“I/P Engine”) brought an action
against AOL Inc., Google Inc. (“Google”), IAC Search &
Media, Inc., Gannett Company, Inc., and Target Corpora-
tion (collectively, the “Google Defendants”) alleging in-
fringement of U.S. Patent Nos. 6,314,420 (the “’420
patent”) and 6,775,664 (the “’664 patent”). A jury re-
turned a verdict finding that all asserted claims were
infringed and not anticipated. J.A. 4163-73. The district
court then determined that the asserted claims were not
obvious and entered judgment in I/P Engine’s favor. See
I/P Engine, Inc. v. AOL Inc., No. 11-CV-0512, 2012 U.S.
Dist. LEXIS 166555 (E.D. VA Nov. 20, 2012) (“Non-
Obviousness Order”). Because the asserted claims of the
I/P ENGINE, INC. v. AOL INC. 3
’420 and ’664 patents are invalid for obviousness, we
reverse.
BACKGROUND
The ’420 and ’664 patents both claim priority to the
same parent patent, U.S. Patent No. 5,867,799. They
relate to a method for filtering Internet search results
that utilizes both content-based and collaborative filter-
ing. See ’420 patent col.1 ll.10-16, col.2 ll.20-26; ’664
patent col.23 ll.29-44.1 Content-based filtering is a tech-
nique for determining relevance by extracting features
such as text from an information item. ’420 patent col.4
ll.22-26; see also J.A. 487. By contrast, collaborative
filtering assesses relevance based on feedback from other
users—it looks to what items “other users with similar
interests or needs found to be relevant.” ’420 patent col.4
ll.28-29; see also J.A. 487. The asserted patents describe a
system “wherein a search engine operates with collabora-
tive and content-based filtering to provide better search
responses to user queries.” ’420 patent col.1 ll.14-16.
Specifically, the asserted claims describe a filter system
that combines content and collaborative data in filtering
each “informon”—or information item—for relevance to a
user’s query.2 Asserted claim 10 of the ’420 patent re-
cites:

1 The specifications of the ’420 and ’664 patents are
substantively identical, but employ slightly dissimilar line
numbering. Unless otherwise noted, citations to the
specification refer to the line numbering used in the ’420
patent.
2 The parties stipulated that the term “informon”
referred to an “information entity of potential or actual
interest to the [individual/first] user.” I/P Engine, Inc. v.
AOL Inc., 874 F. Supp. 2d 510, 517 (E.D. Va. 2012) (inter-
nal quotation marks omitted) (“Claim Construction Or-
4 I/P ENGINE, INC. v. AOL INC.
A search engine system comprising: a system
for scanning a network to make a demand search
for informons relevant to a query from an individ-
ual user; a content-based filter system for receiv-
ing the informons from the scanning system and
for filtering the informons on the basis of applica-
ble content profile data for relevance to the query;
and a feedback system for receiving collaborative
feedback data from system users relative to in-
formons considered by such users; the filter sys-
tem combining pertaining feedback data from the
feedback system with the content profile data in
filtering each informon for relevance to the query.
Id. col.28 ll.1-15; see also id. col.29 ll.32-44.
Asserted claim 1 of the ’664 patent provides:
A search system comprising: a scanning sys-
tem for searching for information relevant to a
query associated with a first user in a plurality of
users; a feedback system for receiving information
found to be relevant to the query by other users;
and a content-based filter system for combining
the information from the feedback system with
the information from the scanning system and for
filtering the combined information for relevance to
at least one of the query and the first user.
’664 patent col.27 ll.27-37.
Claim 26 of the ’664 patent is similar to claim 1, but
cast as a method claim:
A method for obtaining information relevant
to a first user comprising: searching for infor-

der”). The asserted patents explain that an “informon”
can be all or part of a text, video, or audio file. ’420 patent
col.3 ll.30-35.
I/P ENGINE, INC. v. AOL INC. 5
mation relevant to a query associated with a first
user in a plurality of users; receiving information
found to be relevant to the query by other users;
combining the information found to be relevant to
the query by other users with the searched infor-
mation; and content-based filtering the combined
information for relevance to at least one of the
query and the first user.
Id. col.28 ll.56-65.
On September 15, 2011, IP/Engine3 filed a complaint
in the United States District Court for the Eastern Dis-
trict of Virginia alleging that Google’s AdWords, AdSense
for Search, and AdSense for Mobile Search systems,
which display advertisements on web pages, infringed
claims 10, 14, 15, 25, 27, and 28 of the ’420 patent and
claims 1, 5, 6, 21, 22, 26, 28, and 38 of the ’664 patent.
See Claim Construction Order, 874 F. Supp. 2d at 514-15.
On December 5, 2011, the Google Defendants filed coun-
terclaims, seeking declaratory judgments of non-
infringement and invalidity of both the ’420 and ’664
patents. Id. at 514.
Following a Markman hearing, the district court con-
strued disputed claim terms. The court concluded that:
(1) the term “collaborative feedback data” refers to “data
from system users regarding what informons such users
found to be relevant”; (2) the term “scanning a network”
means “looking for or examining items in a network”; and
(3) the term “demand search” refers to “a single search
engine query performed upon a user request.” Id. at 525
(internal quotation marks omitted).
During a twelve-day trial, the Google Defendants
pointed to numerous prior art references to support their

3 In 2012, I/P Engine became a subsidiary of Vrin-
go, Inc. J.A. 2046-47.
6 I/P ENGINE, INC. v. AOL INC.
contention that the claims of the ’420 and ’664 patents
were invalid as anticipated and obvious. In particular,
they argued that U.S. Patent No. 6,006,222 (“Culliss”)
anticipated the asserted claims, and that those claims
were obvious in view of: (1) U.S. Patent No. 6,202,058
(“Rose”); (2) Yezdezard Z. Lashkari, Feature Guided
Automated Collaborative Filtering (July 25, 1995) (M.S.
thesis, Massachusetts Institute of Technology)
(“WebHound”); and (3) Marko Balabanovic & Yoav Sho-
ham, Content-Based, Collaborative Recommendation, 40
Comms. of the ACM 66 (1997) (“Fab”).
The jury returned a verdict on November 6, 2012,
finding that the Google Defendants had infringed all
asserted claims and awarding damages of $30,496,155.4
J.A. 4173. The jury also found that the asserted claims
were not anticipated, and answered a special verdict form
on factual issues pertaining to the obviousness inquiry.
J.A. 4169-72. Specifically, the jury found that “Rose,
[WebHound] and Fab[] were profile systems that did not
disclose a tightly integrated search system, and could not
filter information relevant to the query.” J.A. 4170, 4171-
72.
On November 20, 2012, the district court ruled that
the Google Defendants had “failed to prove, by clear and
convincing evidence, that the ’420 Patent or the ’664
Patent [was] obvious.” Non-Obviousness Order, 2012 U.S.
Dist. LEXIS 166555, at *9. The district court further
determined that the equitable doctrine of laches barred
I/P Engine from recovering damages for any infringement
occurring prior to September 15, 2011, the date of its
complaint. I/P Engine, Inc. v. AOL Inc., 915 F. Supp. 2d
736, 746-49 (E.D. Va. 2012). The court explained that I/P
Engine “had constructive notice that the Google Adwords

4 The jury also awarded I/P Engine a running royal-
ty of 3.5%. J.A. 4173.
I/P ENGINE, INC. v. AOL INC. 7
system potentially infringed its patents as of July 2005
and [yet] failed to undertake any reasonable investigation
to further determine if infringement was occurring.” Id.
at 744. The court stated, moreover, that “[a]lthough
Congress is best left to consider the merits of non-
practicing patent entities in our patent system, the dilato-
ry nature of [I/P Engine’s] suit is precisely why the doc-
trine of laches has been applied to patent law.” Id. at 748.
On December 18, 2012, the Google Defendants filed
motions for a new trial and for judgment as a matter of
law on non-infringement, invalidity, and damages. J.A.
4252-381. I/P Engine also filed post-trial motions, argu-
ing that the district court erred in applying the doctrine of
laches to preclude recovery of damages for infringement
in the period prior to September 15, 2011. J.A. 4433,
4550-56. All of these motions were denied by the district
court. J.A. 59-67.
The Google Defendants then filed a timely appeal
with this court. They argue that: (1) the infringement
determination should be set aside because the accused
systems do not meet claim limitations which require
“combining” content data with feedback data and filtering
“the combined information”; (2) the accused systems do
not meet the limitation contained in claim 10 of the ’420
patent requiring a “demand search”; (3) I/P Engine im-
properly relied on marketing documents, rather than
source code, in attempting to establish infringement and
misled the jury by insinuating that Google had “copied”
the system claimed in I/P Engine’s patents; (4) the district
court erred as a matter of law in finding the asserted
claims non-obvious; (5) the asserted claims are invalid as
anticipated because Culliss discloses filtering Internet
articles based on scores that combine both content and
collaborative feedback data; and (6) I/P Engine failed to
introduce any credible evidence of damages in the period
following the filing of its complaint. I/P Engine filed a
cross-appeal in which it argues that the district court
8 I/P ENGINE, INC. v. AOL INC.
erred in applying the doctrine of laches to bar recovery for
infringement occurring prior to September 15, 2011. I/P
Engine further contends that even if laches does apply, it
is entitled to damages of more than $100 million for
infringement occurring after the date it filed its com-
plaint. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
I. Standard of Review
“Whether the subject matter of a patent is obvious is a
question of law and is reviewed de novo.” Procter &
Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 993
(Fed. Cir. 2009); see PharmaStem Therapeutics, Inc. v.
ViaCell, Inc., 491 F.3d 1342, 1359 (Fed. Cir. 2007). The
factual findings underlying an obviousness determination
include: (1) the scope and content of the prior art; (2) the
differences between the claimed invention and the prior
art; (3) the level of ordinary skill in the art; and (4) any
objective indicia of non-obviousness. See Graham v. John
Deere Co., 383 U.S. 1, 17-18 (1966).
II. The Obviousness Determination
The Google Defendants argue that I/P Engine’s
claimed invention is obvious as a matter of law because it
simply combines content-based and collaborative filtering,
two information filtering methods that were well-known
in the art. They assert, moreover, that the prior art
contained explicit statements describing the advantages
of combining these two filtering techniques, and that it
would have been obvious to include a user’s query in the
filtering process. See Br. of Defendants-Appellants at 35-
38.
We agree and hold that no reasonable jury could con-
clude otherwise. The asserted claims describe a system
that combines content and collaborative data in filtering
each “informon”—or information item—for relevance to an
individual user’s search query. ’420 patent col.28 ll.1-15;
I/P ENGINE, INC. v. AOL INC. 9
’664 patent col.27 ll.27-37. As the asserted patents them-
selves acknowledge, however, search engines, content-
based filtering, and collaborative filtering were all well-
known in the art at the time of the claimed invention. See
’420 patent col.1 ll.20-45. The record is replete, moreover,
with prior art references recognizing that content-based
and collaborative filtering are complimentary techniques
that can be effectively combined. The WebHound refer-
ence explains that “content-based and automated collabo-
rative filtering are complementary techniques, and the
combination of [automated collaborative filtering] with
some easily extractable features of documents is a power-
ful information filtering technique for complex infor-
mation spaces.” J.A. 5427. The Fab reference likewise
notes that “[o]nline readers are in need of tools to help
them cope with the mass of content available on the
World-Wide Web,” and explains that “[b]y combining both
collaborative and content-based filtering systems,” many
of the weaknesses in each approach can be eliminated.
J.A. 5511. Similarly, the Rose patent, which was filed in
1994 by engineers at Apple Computer, Inc., states that
“[t]he prediction of relevance [to a user’s interests] is
carried out by combining data pertaining to the content of
each item of information with other data regarding corre-
lations of interests between users.” J.A. 5414. These
references, individually and collectively, teach the clear
advantages of combining content-based and collaborative
filtering.5

5 I/P Engine points to recent United States Patent
and Trademark Office (“PTO”) reexamination proceedings
which concluded that Rose and WebHound do not antici-
pate the asserted claims of the ’420 patent. J.A. 7899-
902. Here, however, the question is not whether Rose and
WebHound anticipate the asserted claims, but instead
whether the prior art, viewed as a whole, renders the
10 I/P ENGINE, INC. v. AOL INC.
On appeal, I/P Engine does not dispute that the prior
art disclosed hybrid content-based and collaborative
filtering. It contends, however, that it would not have
been obvious to a person of ordinary skill in the art to
filter items for relevance to a user’s query using combined
content and collaborative data. In I/P Engine’s view, the
prior art simply took the results of content-based filtering
and “threw them over a proverbial wall to a separate
profile-based [filtering] system,” but did not also throw
the search query “over the wall” for use in the filtering
process. Br. of Plaintiff-Cross Appellant at 6-7; see also
id. at 40-43; J.A. 3689-90, 3728-31.
The fundamental flaw in I/P Engine’s argument is
that using an individual user’s search query for filtering
was a technique widely applied in the prior art. Indeed,
the shared specification of the ’420 and ’664 patents
acknowledges that “conventional search engines” filtered
search results using the original search query. See ’420
patent col.2 ll.15-18 (explaining that “conventional search
engines initiate a search in response to an individual
user’s query and use content-based filtering to compare
the query to accessed network informons” (emphasis
added)). Given that its own patents acknowledge that
using the original search query for filtering was a “con-
ventional” technique, I/P Engine cannot now evade inva-
lidity by arguing that integrating the query into the

asserted claims obvious. See Cohesive Techs., Inc. v.
Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008) (“Ob-
viousness can be proven by combining existing prior art
references, while anticipation requires all elements of a
claim to be disclosed within a single reference.”); Medi-
chem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1166 (Fed. Cir.
2006) (explaining that in an obviousness analysis “the
prior art must be considered as a whole for what it teach-
es”).